WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Industriel et Commercial S.A. v. Above_Privacy / Host Master, Transure Enterprise Ltd
Case No. D2021-3969
1. The Parties
The Complainant is Crédit Industriel et Commercial S.A., France, represented by MEYER & Partenaires, France.
The Respondent is Above_Privacy / Host Master, Transure Enterprise Ltd, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <cickbank.net> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2022.
The Center appointed Steven A. Maier as the sole panelist in this matter on January 13, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a limited company incorporated in France. It provides banking services under the names and trademarks CIC and CIC BANQUES.
The Complainant is the owner of various trademark registrations for the names CIC and CIC BANQUES. Such trademarks include, for example:
- European Union Trade Mark Registration No. 005891411 for the word mark CIC, registered on March 5, 2008, in International Classes 6, 16, 35, and 36, for goods and services including “financial affairs” and “banking business”.
- United States Trademark No. 74296087 for the design plus words, letters and/or numbers mark CIC BANQUES, registered on June 13, 1995, in International Class 36, for services including “banking”.
The disputed domain name <cickbank.net> was registered on September 27, 2021.
The Complainant provides evidence that the disputed domain name has resolved to a number of different destinations depending upon the user’s IT platform, as discussed further below. At the date of this Decision, the disputed domain name resolves via Microsoft Windows to a website headed “Cickbank.net”, offering what appear to the Panel to be pay-per-click (“PPC”) links to services related to business and finance.
5. Parties’ Contentions
The Complainant states that it is France’s oldest deposit bank, that it has traded since 1859 including under the abbreviation CIC, and that it currently has more than 4.7 million customers. It identifies its principal website at “www.cic.fr” and states that it also owns the domain name <cicbank.com>.
The Complainant submits that the disputed domain name is confusingly similar to its trademarks CIC and CIC BANQUES. It contends that the trademark CIC is wholly incorporated in the disputed domain name and that the term “bank” in the disputed domain name is an English translation of the French word “banque”. The Complainant submits that, in any event, the term “bank” in the disputed domain name is descriptive of its own services and therefore adds to the likelihood of confusion.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its CIC or CIC BANQUES trademarks, that the Respondent has not been known by any name corresponding to the disputed domain name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant submits that the Respondent has used the disputed domain name misleadingly to divert Internet users to a variety of websites for its own commercial gain.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It contends that its trademarks CIC and CIC BANQUES are well known and that the similarity of the disputed domain name to those trademarks creates a presumption of bad-faith registration. The Complainant further contends that the combination of the terms CIC and “bank” within the disputed domain name cannot be the result of mere coincidence and are clearly intended to mislead Internet users into assuming a connection between the disputed domain name and the Complainant and its services.
The Complainant contends that the disputed domain name has resolved to a variety of destinations according to the user’s hardware and software configuration. It exhibits both a webpage purporting to offer a security warning and software for download, which the Complainant states is likely to be malware, and also a PPC website such as that referred to above, offering credit-related services from which the Complainant states the Respondent is likely to receive commissions. The Complainant submits that the Respondent is therefore seeking to attract Internet users to its websites, for commercial gain, by creating a likelihood of confusion between the disputed domain name and the Complainant’s CIC and CIC BANQUES trademarks.
The Complainant adds that the Respondent’s activities are disrupting its business and also tarnishing its reputation, particularly since any connection with potential malware is of particular significance to a financial services provider.
The Complainant further submits that the Respondent Transure Enterprise Ltd has previously been the subject of over 180 successful claims under the UDRP in respect of domain names including those reflecting well-known trademarks. The Complainant cites, in particular, Toyota Motor Sales, U.S.A., Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd., WIPO Case No. D2017-2392, in which the panel found that “Respondent has engaged in a massive pattern of cyber piracy.”
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has registered trademark rights in the marks CIC and CIC BANQUE. The disputed domain name, <cickbank.net>, incorporates the Complainant’s trademark CIC together with the letter “k” and the word “bank”, neither of which prevent the trademark from being recognizable within the disputed domain name. The disputed domain name is also visually and aurally similar to the Complainant’s trademark CIC BANQUE, having numerous characters in common and sounding similar to that trademark when spoken. The Panel therefore finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The use of a domain name to offer software for download or PPC links does not confer rights or legitimate interests on a respondent in circumstances where the disputed domain name is used to target another party’s trademarks, which the Panel finds to be the case in this instance. There being no other evidence of rights or legitimate interests on the part of the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds the Complainant’s trademarks CIC and CIC BANQUE to be distinctive of the Complainant and its services and accepts the Complainant’s submission that the Respondent’s choice of the disputed domain name is unlikely to be coincidental. The Respondent having offered no explanation for its choice of the disputed domain name, the Panel infers that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademarks and with the intention of taking unfair commercial advantage of the Complainant’s reputation and goodwill attaching to those marks.
The Panel finds that the disputed domain name is inherently misleading, as being likely to confuse Internet users into believing it is owned, operated or otherwise affiliated with the Complainant and that the Respondent has taken deliberate advantage of such confusion by diverting such Internet users to websites from which it is likely to derive revenue. The Panel finds in particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its websites or of a product or service on its websites (paragraph 4(b)(iv) of the Policy).
While the above matters are determinative of registration and use in bad faith, the Panel also observes that this appears to be the latest in an extensive pattern of bad-faith registrations on the part of the Respondent, which further reinforces the Panel’s findings on the question of bad faith as discussed in, e.g., section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds therefore that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <cickbank.net>, be transferred to the Complainant.
Steven A. Maier
Date: January 27, 2022